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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2015-00801
`Patent 7,237,634
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Patent No. 7,237,634
`Patent Owner’s Response
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`Case IPR2015-00801
`Attorney Docket No: 36351-0015IPD
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`THE ’634 PATENT ......................................................................................... 2
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`A.
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`B.
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`Background of the ’634 Patent .............................................................. 2
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`Claim Construction ............................................................................... 4
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`1.
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`“setpoint (SP)” ............................................................................ 4
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`The Challenged Claims Require a Comparison of Road Load to
`2.
`Setpoint and MTO ................................................................................. 8
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`3.
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`“abnormal and transient conditions” ......................................... 10
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`III. ARGUMENT ................................................................................................. 11
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`A.
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`B.
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`Ford’s Conclusory Petition is Deficient Under 35 U.S.C. § 103(a) ... 12
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`Grounds 1-8 Should Be Denied—the Prior Art of Record Fails to
`Disclose Using RL to Determine When to Operate the Engine .......... 13
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`1.
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`Severinsky Uses Speed to Determine When to Use the Engine
`14
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`The Passages of Severinsky on Which Ford Relies Are
`2.
`Inapposite—Severinsky Does Not Use Road Load to Determine When
`to Operate the Engine .......................................................................... 18
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`C.
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`Grounds 1-8 Should Be Denied—the Prior Art of Record Fails to
`Disclose a Setpoint .............................................................................. 26
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`1.
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`2.
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`3.
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`Severinsky’s Sweet Spot Is Not a Setpoint ............................... 28
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`Ford’s Focus on Output Torques Is Flawed.............................. 35
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`Severinsky Does Not Disclose the “Abnormal and Transient
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`Conditions” Limitations ...................................................................... 37
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`Ford’s Reliance on ’634 Patent’s Discussion of Severinsky is Flawed
`and Improper ....................................................................................... 40
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`Grounds 1-3, 5, and 8 Should Be Denied—Ford Fails to Establish a
`Rationale to Combine Severinsky with Yamaguchi ........................... 45
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`Ground 2 Should Be Denied—Lateur’s Cruise Control Is Not a Road-
`Load-Based Control Strategy .............................................................. 46
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`D.
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`E.
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`F.
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`G. Ground 3 Should Be Denied—Suga’s Vehicle Does Not Relate to
`Sizing a Motor in a Hybrid Vehicle .................................................... 47
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`H. Grounds 4-6 Should Be Denied—the Prior Art of Record Fails to
`Disclose Limiting a Rate of Change of Torque Output of the Engine to
`Achieve Stoichiometry ........................................................................ 51
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`Vittone Does Not Disclose Controlling the Engine by Limiting
`1.
`a Rate of Change of Torque Output of the Engine ............................. 51
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`Ford Fails to Establish a Motivation to Combine Vittone with
`2.
`Severinsky, Yamaguchi, and Suga ...................................................... 53
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`I.
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`Ground 8 Should Be Denied—the Prior Art of Record Fails to
`Disclose Road-Load-Based Hysteresis ............................................... 55
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`Neither Severinsky nor Frank Discloses Road-Load-Based
`1.
`Hysteresis ............................................................................................ 55
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`2.
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`Ford Fails to Establish a Rationale to Combine ....................... 59
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`IV. CONCLUSION .............................................................................................. 60
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 8
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) ............................................................................ 13
`
`Ex parte Clapp,
`227 U.S.P.Q. 972 (BPAI 1985) .......................................................................... 50
`
`Clearwater Sys. Corp. v. Evapco, Inc.
`394 F. App'x 699 (Fed. Cir. 2010) ...................................................................... 43
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) ............................................................................ 7
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 4
`
`Elkay Mfg. Co. v. Ebco Mfg. Co.,
`192 F.3d 973 (Fed. Cir. 1999) ............................................................................ 43
`
`Fuji Photo Film Co. v. Int'l Trade Comm’n,
`386 F.3d 1095 (Fed. Cir. 2004) ............................................................................ 7
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 12, 13
`
`Ex parte Gunasekar, et al.,
`Appeal 2009-008345, 2011 WL 3872007 (BPAI Aug. 29, 2011) ............... 50, 60
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 47
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 58, 60
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`KSR lnt’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 12, 58, 60
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .................................................................... passim
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ...................................................................... 7, 10
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`In re Oelrich,
`666 F.2d 578 (CCPA 1981) ................................................................................ 13
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`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 44
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`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 4
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`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ............................................................................ 38
`
`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................... 8
`
`Whole Space Indus., Ltd. v. Zipshade Indus. (B.V.I.) Corp.,
`IPR2015-00488, Paper 14 (PTAB Jul. 24, 2015) ......................................... 49, 60
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`Statutes
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`35 U.S.C. § 103 ........................................................................................ 1, 11, 12, 59
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`35 U.S.C. § 311 .......................................................................................................... 1
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`35 U.S.C. § 322 ........................................................................................................ 12
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`Other Authorities
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`37 C.F.R. § 42.22 ..................................................................................................... 12
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`37 C.F.R. § 42.100 ................................................................................................. 1, 4
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`37 C.F.R. § 42.120 ..................................................................................................... 1
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`Exhibit Number
`Ex. 2801
`Ex. 2802
`Ex. 2803
`Ex. 2804
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`Ex. 2805
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`Ex. 2806
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`Ex. 2807
`Ex. 2808
`Ex. 2809
`Ex. 2810
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`Ex. 2811
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`Ex. 2812
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`Ex. 2813
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`Ex. 2814
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`Ex. 2815
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`Ex. 2816
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`Ex. 2817
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`Ex. 2818
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`EXHIBITS
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`Exhibit Name
`U.S. Patent No. 8,214,097 File History
`Table of Ford’s IPR Petitions
`Appendix A (January 15, 2014)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00570)
`(May 8, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(Mar. 3, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(May 29, 2015)
`Declaration of Daniel A. Tishman in Support of
`Patent Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`Gregory W. Davis Deposition Tr. (IPR2014-00571 &
`IPR2014-00579) (Jan. 13, 2015)
`Gregory W. Davis Deposition Tr. (IPR2014-01416)
`(June 3, 2015)
`Gregory W. Davis Deposition Tr. (IPR2014-00571)
`(May 8, 2015)
`Excerpts from Neil Hannemann Deposition Tr.
`(IPR2014-00571) (April 7, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00570)
`(Jan. 12, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-01415)
`(May 29, 2015)
`Integrated Microprocessor Control of a Hybrid i.c.
`Engine/Battery-Electric Automotive Power Train,”
`P.W. Masding, J.R. Bumby, Jan. 1990
`Masding, Philip Wilson (1988) “Some drive train
`control problems in hybrid i.c engine/battery electric
`vehicles,” Durham theses, Durham University
`Excerpt from McGraw-Hill Dictionary of Scientific
`and Technical Terms, Sixth Ed., 2003.
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`Pursuant to 37 C.F.R. § 42.120 and the Decision to Institute (“Institution
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`Decision” or “Inst. Dec.”), Patent Owners Paice LLC and the The Abell
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`Foundation, Inc. (collectively, “Paice”) hereby submit this Response to the Petition
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`for Inter Partes Review of U.S. Patent. No. 7,237,634 Under 35 U.S.C. § 311 et
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`seq., and 37 C.F.R. § 42.100 et seq. (“Petition” or “Pet.”) filed by Ford Motor
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`Company (“Ford”).
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`I.
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`INTRODUCTION
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`U.S. Patent. No. 7,237,634 (“the ’634 patent”), which is the subject of the
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`present Petition, claims an inventive and novel method of control for a hybrid
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`electric vehicle that uses road load, setpoint, and the maximum torque output of an
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`internal combustion engine to determine when to transition between various
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`operating modes in which the vehicle is propelled by an electric motor, an internal
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`combustion engine, or both. Ford’s Petition challenges claims 80, 111, 114, 144,
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`241, 264, 266, 267, 278-280, and 282-291 (“the challenged claims”) as obvious
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`under 35 U.S.C. § 103. Following Paice’s preliminary response, filed on August
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`10, 2015, the Board instituted review of each of the challenged claims, except for
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`80 and 114, based on seven out of eight proposed grounds for obviousness over
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`U.S. Patent No. 5,343,970 (“Severinsky”) in combination with one or more of U.S.
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`Patent No. 5,865,263 (“Yamaguchi”), U.S. Patent No. 5,823,280 (“Lateur”), U.S.
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`Patent No. 5,263,104 (“Suga”), Oreste Vittone et al., FIAT Research Centre, Fiat
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`Conceptual Approach to Hybrid Car Design, 12th International Electric Vehicle
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`Symposium, Volume 2 (“Vittone”), and U.S. Patent No. 5,842,534 (“Frank”). See
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`Inst. Dec. at 35. All challenged claims are patentable over the cited grounds for
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`the reasons set forth herein.
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`Ford’s arguments with regards to the ’634 patent are fundamentally flawed.
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`The ’634 patent’s innovative control strategy, using road load and setpoint to
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`decide when to move between operating modes to maximize efficiency, is absent
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`in the cited references. Moreover, none of the cited references discloses the road-
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`load-based hysteresis in determining when to turn the engine on and off, as
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`required by claims 111 and 144, or limiting the rate of change of torque output of
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`the engine, as required by claim 241 and its dependent claims. Therefore, for the
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`reasons detailed more fully herein, the Board should affirm the patentability of
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`claims 111, 144, 241, 264, 266, 267, 278-280, and 282-291 of the ’634 patent.
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`II. THE ’634 PATENT
`A. Background of the ’634 Patent
`The ’634 patent (Ex. 1851), entitled “Hybrid Vehicles,” issued on July 3,
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`2007, from an application with a priority date of September 14, 1998. The ’634
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`patent discloses embodiments of a hybrid electric vehicle, with an internal
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`combustion engine, two electric motors and a battery bank. A microprocessor is
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`employed to control the internal combustion engine, the two electric motors, and
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`the battery bank based on the hybrid vehicle’s instantaneous torque requirements
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`such that the internal combustion engine is only run under high efficiency
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`conditions. See, e.g., Ex. 1851 at Abstract.
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`The hybrid vehicle may be operated in a number of modes based on the
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`vehicle’s instantaneous torque requirements, the engine’s maximum torque output,
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`the state of charge of the battery, and other operating parameters. In an
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`implementation of the ’634 patent, the microprocessor employs a hybrid system
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`control strategy based on sensed and calculated values for system variables that are
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`evaluated against setpoints and causes the vehicle to operate in various operating
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`modes pursuant to this control strategy. See, e.g., id. at 40:16-26.
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`For example, in mode I, the hybrid vehicle is operated as an electric car,
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`with the traction motor providing all torque to propel the vehicle. Id. at 37:24-32.
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`As the vehicle continues to be propelled in electric only mode, the state of charge
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`of the battery may become depleted, and need to be recharged. In this case, the
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`hybrid vehicle may transition to mode II to recharge the battery, in which the
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`vehicle operates as in mode I, with the addition of the engine running the
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`starter/generator motor to provide electrical energy to operate the traction motor
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`and recharge the battery. See, e.g., id. at 37:32-36. When the internal combustion
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`engine can be operated in its fuel efficient range to propel the vehicle, the hybrid
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`vehicle operates in mode IV, with the engine providing torque to propel the
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`vehicle. Id. at 37:42-44; 38:51-61. If the vehicle requires additional torque, such
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`as for acceleration or hill-climbing, the vehicle may enter mode V, where the
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`traction motor provides additional torque to propel the vehicle beyond that
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`provided by engine 40. Id. at 38:1-8.
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`B. Claim Construction
`In IPR proceedings, the Board applies the “broadest reasonable
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`interpretation” standard, which mandates that “[a] claim in an unexpired patent
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`shall be given its broadest reasonable construction in light of the specification of
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`the patent in which it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo
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`Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015). The Federal Circuit has
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`recognized, however, that that standard requires that the claims must be read in
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`light of the specification as it would be interpreted by one of ordinary skill in the
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`art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); see also
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`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
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`“setpoint (SP)”
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`1.
`A “setpoint” is “a definite, but potentially variable value at which a
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`transition between operating modes may occur.” In its Institution Decision, the
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`Board construed “setpoint” as a “predetermined torque value that may or may not
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`be reset.” Paice respectfully requests that the Board reconsider its construction as
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`it is unreasonably broad and does not reasonably reflect the disclosure of the ’634
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`patent. Instead, the Board should adopt Paice’s construction: a definite, but
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`potentially variable value at which a transition between operating modes may
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`occur. The claims and the specification of the ’634 patent make clear that a
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`“setpoint” is not simply a numerical value divorced from the context of the rest of
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`the control system. Rather, “setpoint” serves the crucial function of marking the
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`transition from one claimed mode to another, and in particular, the transition from
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`propelling the vehicle with the motor to propelling the vehicle with the engine.
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`See, e.g., Ex. 1851 at 40:41-49.
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`For example, in claims 1 and 16, the “setpoint” marks the transition between
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`a mode in which only the motor propels the vehicle, to modes in which the engine
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`also can be used to propel the vehicle or charge the battery. See Ex. 1851 at claims
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`1 and 16. Dependent claim 6 similarly recites “…wherein the controller is further
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`operable to: monitor road load (RL) on the hybrid vehicle over time; and control
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`transition between propulsion of the hybrid vehicle by the first and/or the second
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`electric motors to propulsion by the engine responsive to the RL reaching the SP . .
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`. .” Ex. 1851 at claim 6 (emphasis added); see also id. at claims 8, 11, 19.
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`Additionally, the specification unambiguously defines “setpoint” as
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`synonymous with a “transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it is
`repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO. This
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`setpoint, referred to in the appended claims as “SP”, and sometimes
`hereinafter as the transition point (i.e., between operation in modes I
`and IV) is obviously arbitrary and can vary substantially, e.g., between
`30-50% of MTO, within the scope of the invention.
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`Id. at 40:41-49; see also id. at 40:16-26 (“the microprocessor tests sensed and
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`calculated values for system variables, such as the vehicle’s instantaneous torque
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`requirement, i.e., the ‘road load’ RL . . . against setpoints, and uses the results of
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`the comparisons to control the mode of vehicle operation.”); 40:63-65 (“For
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`example, in response to recognition of a regular pattern as above, the transition
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`point might be adjusted to 60% of MTO”); 41:4-8 (“It is also within the scope of
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`the invention to make the setpoint SP to which the road load is compared to control
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`the transition from mode I to mode IV somewhat ‘fuzzy’ [sic], so that SP may vary
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`from one comparison of road load to MTO to the next depending on other
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`variables”); 41:59-63 (“FIG. 9 thus shows the main decision points of the control
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`program run by the microprocessor, with the transition point between mode I, low-
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`speed operation, and mode IV highway cruising, set at a road load equal to 30% of
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`MTO”); 44:24-31 (“Further, as noted above the transition points between modes I,
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`IV, and V in particular may vary in accordance with the operator's commands…”).
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`The “setpoint” marks the amount of “road load” at which the claimed
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`control system actively changes the vehicle from one mode to another (e.g. from
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`motor propulsion to engine propulsion). The challenged patent recognizes the
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`significant efficiencies to be gained by transitioning between motor propulsion to
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`engine propulsion in response to “road load.” See, e.g., Ex. 1851 at 13: 44-51 (“By
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`comparison . . . the vehicle’s operating mode—that is, the selection of the source
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`of torque needed to propel the vehicle—is determined based on the amount of
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`torque actually required. In this way the proper combination of engine, traction
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`motor, and starting motor is always available. This apparently simple point has
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`evidently been missed entirely by the art.”), 13:52-14:2 (noting that prior art
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`references using vehicle speed to transition between modes “inherently operate the
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`engine under less efficient conditions”).
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`The Board’s initial construction of “setpoint” as a “predetermined torque
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`value that may or may not be reset,” see Inst. Dec. at 11, is incorrect and
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`unreasonably broad because it fails to recognize that “setpoint” represents a point
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`at which a transition between different operating modes may occur. The
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`broadening construction is “divorced from the specification and the record
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`evidence” and inconsistent with “the one that those skilled in the art would reach.”
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`See Microsoft, 789 F.3d at 1298 (quoting NTP, 654 F.3d at 1288; Cortright, 165
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`F.3d at 1358). In essence, the construction covers hybrid vehicle systems where
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`transitions between modes never occur—a clear error that is fundamentally
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`contrary to the specification of the ’634 patent. See Fuji Photo Film Co. v. Int'l
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`Trade Comm’n, 386 F.3d 1095, 1098 (Fed. Cir. 2004) (claim should not be given
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`overly broad construction that is inconsistent with how claim term is used in the
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`specification). The Board’s “broadest reasonable interpretation” must be
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`reasonable, and must be in conformity with the invention as described in the
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`specification. In re Vaidyanathan, 381 Fed. Appx. 985, 995-96 (Fed. Cir. 2010);
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`see also In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012)
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`(holding that Board’s construction of “electrochemical sensor” was “unreasonable
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`and inconsistent with the language of the claims and the specification”).
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`Additionally, SP should not be limited to a torque value—the specification
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`makes clear that a setpoint is not limited to a torque value and in fact could also be
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`a measure of the state of charge of the battery.
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`[T]he microprocessor tests sensed and calculated values for system
`variables, such as the vehicle's instantaneous torque requirement, i.e.,
`the “road load” RL, the engine's instantaneous torque output ITO, both
`being expressed as a percentage of the engine's maximum torque output
`MTO, and the state of charge of the battery bank BSC, expressed as a
`percentage of its full charge, against setpoints, and uses the results of
`the comparisons to control the mode of vehicle operation.
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`Ex. 1851 at 40:16-26 (emphasis added).
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`Therefore, Paice respectfully requests that the Board reconsider its
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`construction and adopt Paice’s construction of “setpoint” to make clear that it is a
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`value “at which a transition between operating modes may occur.”
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`2. The Challenged Claims Require a Comparison of Road Load
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`to Setpoint and MTO
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`Each of the challenged claims as properly construed require a comparison of
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`road load to setpoint and MTO. See Ex. 1851 at claim 80 (“operating at least one
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`electric motor to propel the hybrid vehicle when the RL required to do so is less
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`than a setpoint (SP); operating an internal combustion engine of the hybrid vehicle
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`to propel the hybrid vehicle when the RL required to do so is between the SP and a
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`maximum torque output (MTO) of the engine, … operating both the at least one
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`electric motor and the engine to propel the hybrid vehicle when the torque RL
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`required to do so is more than the MTO”). Because Ford appears intent on
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`interpreting these limitations in an unreasonably broad manner to remove the
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`comparison requirement and essentially capture any system where a torque value is
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`above/below a threshold either by coincidence or otherwise, the Board should
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`construe these limitations to make clear that the claimed controller (or method of
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`control) selects operating modes based on a comparison of RL to SP or MTO.
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`Specifically, the Board should construe “operating at least one electric motor
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`to propel the hybrid vehicle when the RL required to do so is less than a setpoint
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`(SP)” as “operating at least one electric motor to propel the hybrid vehicle when a
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`comparison of the RL to a setpoint (SP) results in a determination that the RL
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`required to do so is less than a SP.” Second, the Board should construe “operating
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`an internal combustion engine of the hybrid vehicle to propel the hybrid vehicle
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`when the RL required to do so is between the SP and a MTO” as “operating an
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`internal combustion engine of the hybrid vehicle to propel the hybrid vehicle when
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`a comparison of the RL to a SP and a MTO results in a determination that the RL
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`required to do so is between the SP and a MTO of the engine.” Third, the Board
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`should construe “operating both the at least one electric motor and the engine to
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`propel the hybrid vehicle when the torque RL required to do so is more than the
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`MTO” as “operating both the at least one electric motor and the engine to propel
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`the hybrid vehicle when a comparison of the RL to a SP and a MTO results in a
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`determination that the torque RL required to do so is more than the MTO.”
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`The intrinsic evidence makes clear that the invention is directed to a control
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`algorithm for selecting operating modes based on the comparison of road load to
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`SP and MTO (see Section II.B.1.) such that any other construction would be
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`“divorced from the specification and the record evidence” and inconsistent with
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`“the one that those skilled in the art would reach.” Microsoft Corp. v. Proxyconn,
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`Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d
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`1279, 1288 (Fed. Cir. 2011).
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`“abnormal and transient conditions”
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`3.
`The Board should construe “abnormal and transient conditions” as “starting
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`and stopping of the engine and provision of torque to satisfy drivability or safety
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`considerations,” to make clear that it does not include “city traffic and reverse
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`operation.” During the prosecution of the ’097 patent, the patentee distinguished
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`“abnormal and transient conditions” from “city traffic and reverse operation:”
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`[T]he Examiner interprets “abnormal and transient conditions” wherein
`the engine can be run at output levels less than SP, the minimum power
`output of the engine under normal circumstances, as “in traffic or city
`driv[ing] too many traffic light so too many stops and reverse
`operation.” In fact, city traffic and reverse operation are normal
`conditions and are explicitly provided for. In both, the vehicle typically
`operates as an electric car, with the traction motor providing the torque
`necessary to propel the vehicle, and with the ICE operated to charge the
`battery when it is discharged. The “abnormal and transient conditions”
`referred to are such conditions as starting the engine, during which
`operation it must necessarily be operated at less than SP for a short time.
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`Ex. 2801 at 238. However, Ford improperly interprets “abnormal and transient”
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`conditions broadly as comprising operation in traffic. See Pet. at 32-33.
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`The Board should construe “abnormal and transient conditions” as “starting
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`and stopping of the engine and provision of torque to satisfy drivability or safety
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`considerations.” At a minimum, the Board should reject Ford’s construction and
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`adopt a construction that does not encompass “city traffic and reverse operation.”
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`III. ARGUMENT
`Each of the seven instituted grounds of unpatentability should be denied
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`because the claimed invention is novel and nonobvious. In particular, Ford fails to
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`provide an adequate obviousness analysis under 35 U.S.C. § 103(a). Moreover,
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`Severinsky in combination with any or all of Yamaguchi, Lateur, Suga, Vittone,
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`and Frank fails to disclose or render obvious the RL, SP, road load-based
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`hysteresis, and “limiting a rate of change” limitations.
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`Ford’s Conclusory Petition is Deficient Under 35 U.S.C. § 103(a)
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`A.
`As a preliminary matter, the Petition in its entirety is improper because it does
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`not perform an adequate obviousness analysis, thus falling short of the requirements
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`of 35 U.S.C. § 103(a), 35 U.S.C. § 322, and 37 C.F.R. § 42.22(a). Taking Ground 1
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`as an example, Ford fails to identify the differences between Severinsky and
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`independent claim 267. As a result, Ground 1 fails to establish that “the differences
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`between the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person of ordinary skill in the art to which the subject matter pertains.”
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`35 U.S.C. § 103(a); see also KSR lnt’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
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`(explaining that “the scope and content of the prior art are to be determined;
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`differences between the prior art and the claims at issue are to be ascertained; and
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`the level of ordinary skill in the pertinent art resolved” (quoting Graham v. John
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`Deere Co., 383 U.S. 1, 17-18 (1966))).
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`Specifically, with respect to Ground 1, Ford claims to be performing an
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`obviousness analysis but for several claim elements does not indicate whether
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`Severinsky actually discloses or merely renders obvious that claim element. Instead,
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`Ford seems to argue that Severinsky discloses each of these claim elements but
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`curiously concludes each assertion with a statement that a person of ordinary skill in
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`the art (“POSA”) would have “understood” that those claim elements are present.
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`See, e.g., Pet. at 12 (“A POSA would have understood that the microprocessor can
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`deliver ‘all torque required,’ or determine that ‘torque in excess’ of engine
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`capabilities is ‘required’ only by ‘determining [the] instantaneous road load (RL)
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`required to propel the hybrid vehicle.’”); Pet. at 14; id. at 16.
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`As a result, it is entirely unclear whether Ford is advancing anticipation
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`arguments (e.g., through the doctrine of inherency) or obviousness arguments for
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`each of these claim elements. If the former, Ford fails to explain why each particular
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`claim element is necessarily present. Bettcher Indus., Inc. v. Bunzl USA, Inc., 661
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`F.3d 629, 639 (Fed.Cir.2011) (“Inherency . . . may not be established by probabilities
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`or possibilities.” (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981))). If the
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`latter, Ford fails to provide the requisite Graham v. John Deere analysis by failing
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`to, among other things, identify the differences between the claimed subject matter
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`and the prior art and identify why those differences would have been obvious to a
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`POSA. Ford’s conclusory Petition is insufficient to establish obviousness.
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`B. Grounds 1-8 Should Be Denied—the Prior Art of Record Fails to
`Disclose Using RL to Determine When to Operate the Engine
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`Grounds 1 through 8 should be denied because the prior art on which Ford
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`relies does not disclose or render obvious using road load to determine when to
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`select operating modes. For example, all of the challenged claims require using
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`road load to determine when to operate the internal combustion engine to propel
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`the hybrid vehicle and when to operate one or more electric motors. See, e.g., Ex.
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`1851 at claim 267 (“operating an internal combustion engine of the hybrid vehicle
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`to propel the hybrid vehicle when the RL required to do so is between the SP and a
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`maximum torque output”). More specifically, as properly construed (see Section
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`II.B.2), the claims require the comparison of road load to a setpoint. Ford relies
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